NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
SEIKO EPSON CORPORATION,
Plaintiff/Counterclaim Defendant-Appellant,
and
EPSON RESEARCH AND DEVELOPMENT, INC.
and EPSON AMERICA, INC.,
Counterclaim Defendants-Appellees,
v.
CORETRONIC CORPORATION,
Defendant/Counterclaimant-
Cross Appellant,
and
OPTOMA TECHNOLOGY, INC.,
Defendant-Appellee.
__________________________
2009-1439, -1440
__________________________
Appeals from the United States District Court for the
Northern District of California in 06-CV-6946, Judge
Marilyn H. Patel.
SEIKO EPSON v. CORETRONIC 2
___________________________
Decided: May 20, 2010
___________________________
WILLIAM J. UTERMOHLEN, Oliff & Berridge, PLC, of
Alexandria, Virginia, argued for plaintiff/counterclaim
defendant-appellant and counterclaim defendants-
appellees. With him on the brief were JAMES A. OLIFF and
JOHN W. O’MEARA.
STEVEN D. HEMMINGER, Alston and Bird LLP, of Palo
Alto, California, argued for defendant/counterclaimant-
cross appellant and defendant-appellee. On the brief
were YITAI HU, MADISON C. JELLINS and ELIZABETH H.
RADER.
__________________________
Before MICHEL, Chief Judge, LOURIE, and BRYSON, Cir-
cuit Judges.
PER CURIAM.
Four patents are at issue in this case: U.S. Patent
Nos. 6,527,392 and 6,203,158, asserted by Seiko Epson
Corporation, and U.S. Patent Nos. 6,739,831 and
6,742,899, asserted on counterclaims by Coretronic Cor-
poration. As to three of the patents, we find that the
arguments raised by the parties on appeal have no merit.
We therefore affirm the district court’s judgments with
respect to the ’392, ’831, and ’899 patents for the reasons
given by the district court.
The ’158 patent presents a more difficult issue. The
’158 patent describes a projector that conducts air from
outside the projector directly through the power unit in
order to cool it more effectively. Seiko Epson asserted
3 SEIKO EPSON v. CORETRONIC
infringement of two independent claims. Claim 1 recites
a projector comprising:
a power unit including a ventilating path provided
inside the power unit for circulating cooling air;
an outer case that stores the optical unit and the
power unit;
a first cooling air intake port located on the outer
case that provides cooling air from outside of the
outer case to the optical unit; and
a second cooling air intake port located on the
outer case that directly conducts cooling air from
the outside of the outer case to the ventilating
path, said second cooling air intake port compris-
ing:
an air inlet provided on the power unit, and
a duct connecting said second cooling air intake
port and the air inlet.
Similarly, claim 5 recites a projector comprising:
a power unit including an air inlet and an air out-
let;
an outer case that stores the optical unit and the
power unit;
SEIKO EPSON v. CORETRONIC 4
a first cooling air intake port located on the outer
case that provides cooling air from outside of the
outer case to the optical unit;
a second cooling air intake port located on the
outer case that directly conducts cooling air from
the outside of the outer case to the air inlet; and
an exhaust vent provided on the outer case that
directly conducts air exhausted from the air outlet
to the outside of the outer case.
At the claim construction hearing, Seiko Epson pro-
posed that the phrase “directly conducts cooling air” be
construed to mean “transmits cooling air without sub-
stantial contamination by internal sources of heat.” The
district court agreed in essence with Seiko Epson’s pro-
posed construction, but modified it to “transmits cooling
air without [increasing] its temperature to that of the air
inside the outer casing of the projector.” The court ex-
plained that the change was necessary because Seiko
Epson’s proposed construction was “not limited to the
air’s temperature.” The court also noted that the modified
construction was consistent with how the patent distin-
guished the prior art, which was described as being less
efficient because the air used to cool the power unit “had
already been heated by many other elements located in
the outer case.”
We hold that the district court erred in its construc-
tion of “directly conducts cooling air,” and we adopt Seiko
Epson’s narrower construction. Claims 1 and 5 recite that
the second air intake port directly conducts not just
“cooling air,” but “cooling air from the outside of the outer
case.” The inclusion of that additional phrase indicates
that air from outside of the case must be conducted di-
5 SEIKO EPSON v. CORETRONIC
rectly to the power unit without substantial contamina-
tion by the air inside the case. Moreover, it reveals that
the modifying term “cooling” is merely descriptive rather
than definitional, since all air from outside of the case is
presumed to be cooler than the air inside the case.
That interpretation is further supported by the speci-
fication, which clarifies that the term “cooling” is used in
the patent solely in reference to “fresh” air from outside of
the case. For instance, the abstract of the patent states
that the second air intake port “directly conduct[s] fresh
air into the ventilating path. Because the interior of the
power unit is cooled by fresh air which is cooler than the
air inside the outer case, cooling efficiency is enhanced.”
The Summary of the Invention section of the specification
reiterates that the invention
directly conduct[s] fresh air from outside the outer
case from the cooling air intake port to the inlet of
the ventilating path. Because the cooling air con-
ducting means directly conducts fresh air to the
ventilating path, and because fresh air is cooler
than the air in the outer case, the interior of the
power unit can be cooled with high efficiency.”
’158 patent, col. 2, line 67 to col. 3, line 6. The patent also
notes that the duct recited in claim 1, which connects the
second air intake port and the air inlet of the power unit,
“only introduces fresh air from the cooling air intake port
to the ventilating path . . . [and] prevents the air from the
outer case, which is hotter than the fresh air, from enter-
ing into the ventilating path.” Id., col. 3, ll. 18-21. Those
statements demonstrate that the thrust of the invention
is not simply to pass any form of cooler air through the
power unit, but rather to inject “fresh” air from outside
the case directly into the ventilating path.
SEIKO EPSON v. CORETRONIC 6
Because we are satisfied that “cooling air from the
outside of the outer case” has a more limited meaning
than “cooling air,” and that directly conducting such air to
the power unit requires a narrower construction than the
one provided by the district court, we vacate the district
court’s grant of summary judgment as to the ’158 patent.
On motion for summary judgment, the district court held
that the asserted claims of the ’158 patent were invalid in
light of Japanese Patent Application No. 4-271334 (“Na-
kamura”). The Nakamura reference, however, plainly
fails to satisfy our construction of “directly conducts
cooling air from the outside of the case.” Although Na-
kamura teaches a second air intake port located in the
vicinity of the power unit, it does not provide an uninter-
rupted path from that port to the power unit. Instead,
the figures in the Nakamura reference indicate that the
fresh air entering through the second air intake port
mixes with ambient air from inside the case before reach-
ing the power unit. Consequently, the fresh air entering
through the second air intake port is not directly con-
ducted to the power unit as required by the ’158 patent.
While we vacate the district court’s judgment as to
the ’158 patent and remand for further proceedings, we do
not rule out the possibility that other prior art, standing
alone or in combination with the Nakamura reference,
might sustain the district court’s finding of invalidity.
Our decision is limited to holding that the district court
erred in its construction of “directly conducts cooling air”
and that, under a narrower construction, the Nakamura
reference fails to disclose the required structure. 1
1 Seiko Epson moved this court to take judicial no-
tice of the definitions of several terms in generally avail-
able references. We grant the motion to take judicial
notice of the fact that those references define the terms as
they do, although we do not take judicial notice of the
correctness of those definitions.
7 SEIKO EPSON v. CORETRONIC
AFFIRMED IN PART, VACATED IN PART, and
REMANDED.